“The Search Continues…”

I said it before, I’ll say it again: Meat and Potatoes.

We talked about search strategies today. Let me step back for a moment and clarify – when I say we did X today, I don’t mean the entire day. I mean that we had a lecture on it. So if any potential examiners are reading this and thinking “you spent the whole day talking about search strategies?”, the answer is “No.” In any given day we might have between one and four lectures, plus one or more quizzes, plus exercises.

Anyway, back to search strategies. I’m pretty impressed by the wide array of search tools available to examiners now, and somewhat amazed about how difficult things must’ve been even a few years ago. In addition to EAST and WEST, we have access to a large number of non-patent literature databases as well as “special search help” as available. There are quite a few options for beginning a search. We got lots of helpful hints for refining our searches and making them more targeted. But we haven’t yet gotten guidance on how to end the search when it isn’t fruitful. At some point, you just have to say “Gee, guess nothing does teach these claims, or motivate combination.” And lets be honest here… one has to be mindful of production. You have to know when enough is enough.

At the same time, you should know your freakin’ art. A lot of questions people seem to be having would be eliminated if they thought for a moment about what searching really means. It means that the invention you are examining didn’t come from God’s lips to the inventor’s ear, most likely. Inventions are almost always combinations of old things put together. That’s the nature of invention. New uses for old things. But that invention fits within a category, a class, and it should be a class with which you have some familiarity. That familiarity, along with the classification listing, along with broader searching techniques, ought to be able to guide you to some narrow sets of possible art that will spur you on to finding better art. It should give you a sense of whether or not the invention is brand spankin’ new or just kinda new. No, those aren’t legal terms.

And then there’s reading the claims (properly) as broadly as they can be construed in light of the specification, and thinking about things in a clever way. You probably can’t be taught that.

We had some 103 exercises this morning that had some very clever answers from whoever wrote them up. Of course, there’s a danger with giving those kinds of clever answers to students. First, they might mistakenly think that they, too, are that clever. Second, they might think that they’re not, and that maybe they’re not quite clever enough to do the job.

7 thoughts on ““The Search Continues…””

From the looks of your schedule, I’d say you started somewhat more recently than I did… I came into the PTA in February this year… One piece of advice I’d share related to what you posted here is to know exactly what you’re *supposed* to be examining… Just because it’s in your docket doesn’t mean it properly belongs to your art unit. I wasted a lot of time getting hung up on things I just couldn’t find art for, then talked to a primary who told me the case should have been transferred. I transferred it, and when I followed up in eDan a day or so later, I saw the person I transferred it to had already finished a first action on it! Now I check in classification insight for the class/subclass descriptions of every case’s class/subclass I get to make sure they are appropriate. Half the time, in my class anyway (250), things I get are better classified under 438 or the like…

Checking that will likely save you a lot of time, because cases that ARE properly classified for your art unit just magically seem easier (most likely since it’s the art you were hired based on your qualifications to examine)!

You could (and probably should) spend more like an entire week talking about search strategies. Keyword searching is not the best way to find references…think about doing citation searching (forward and backward) and don’t forget that the patent classification system is there to help you find relevant art…know it and USE it.

BTW, I found your very interesting blog through a link from PatentlyO…keep up the good work.

I very much enjoy your blog. I think many of your observations are very accurate.

It will be interesting to see your view of things as you move into the production stage. Its very much like putting a puzzle together under a deadline. Or taking a timed exam. It is thrilling when you are successful and very disabling when you are not.

1. What do you think (in general of course) about your teachers at the Academy? Do they seem fair and balanced regarding the rights of inventors versus the rights of the public? Do they talk public policy? Do they teach you how to read court cases involving patents or do they say leave that to the solicitor’s office and follow along only in the MPEP? Do they teach you how to read patent apps when you start a search? If so, what do you read first? The Abstract? The Summary? Claim 1? Figure 3?

2. What do you think (in general of course) about your fellow cadets at the Academy? Do they seem fair and balanced regarding the rights of inventors versus the rights of the public? The “battle” between examiners and patent attorneys/agents/pro se inventors? Do they talk public policy? Do any of them know how to read court cases involving patents? Are they all ex-engineers or a mix from different fields (i.e. ex biotech lab rats)?

3. What do you think about some of the patent blog sites out here in the wild? i.e. Patently-O, etc. Are any of them helpful to cadets for getting a kick start into the wonderful world of patents?

They will never teach you when your search is done. They put off the classes about allowance until the very end of the training… even then they don’t really tell you how to know you need to do an allowance, they just tell you how to do one.

In some arts, you will never really know if you missed something; in other arts, after 4 years you will look at an application and know exactly what reference to pull up, or exactly what they need to put in the claim to make it brand spanking now (as you put it).

As a junior examiner, you stop searching when either (a) you find art to reject the claims or (b) convince your boss and/or a primary that you have searched everywhere, and they agree that you should have found it if it exists. Once you become a primary… well.. you have to make that decision on your own. 😉

Great blog! Been going through the academy as well and this like a narration of my life.

With regards to classification, I HIGHLY recommend spending your free time (while not in lecture or taking a quiz) studying your class, especially if you know you are going to be assigned to a specific set of subclasses. I wish I had done a bit more of this. You’ll find once you interact with the TC more that they expect you to know and to search all proper subclasses when examining.